Mallesons Stephen Jaques
Confidential communication
Tony Cooke said:
>The question that needs to be resolved is how should a domain name dispute
>fairly be resolved when the genuine firm "Apple Drycleaning" wishes to
>register the site say www.apple.mc?
I personally agree with Tony's comments, but note a leading US practitioner
(Barbara Solomon) explained the US adopted its anti-cybersquatting law
because of increasing concern that cases like Panavision v Toeppen were
stretching trade mark law too far. This was so even thought the USA, unlike
Australia, also has a legal regime which prohibits trade mark dilution.
Another UK case has dealt with the situation where there are two genuine
users of a trade mark in different fields: Prince Computer Limited v Prince
Sports Inc. The "other" legitimate user, which secured the domain name
first, was entitled to keep it.
Warwick A Rothnie
Partner
Mallesons Stephen Jaques Melbourne
Direct line (61 3) 9643 4254
Fax (61 3) 9643 5999
-----Original Message-----
From: Aristedes Maniatis [mailto:ari&#167;ish.com.au]
Sent: Tuesday, 14 November 2000 3:20
To: dns&#167;auda.org.au
Subject: Re: Study Finds Bias in Internet domain name dispute resolution
on 14/11/00 1:04 PM, Patrick Corliss at patrick&#167;quad.net.au wrote:
> But if I buy all the valuable works of Picasso then I am an art collector
or
> an
> investor. I am not a blackmailer as I am not forcing anybody to buy them
off
> of
> me. Sometimes these overarching laws lead off in very funny places.
>
> And even if I did ring up Picasso and said "I've acquired some of your
> paintings
> legitimately, do you want to buy them back?" that's hardly a crime.
That's the real problem with analogies. They don't always work. Our legal
system is based on a concept of trying to compare a current situation with
what has gone in the past or with something the court considers similar
(precendent). In the case of domain names, there are very few precedents
which add value to the discussion.
We would all agree that cybersquatting is more like blackmail than it is art
collection. But it isn't quite the same as stealing Microsoft's source code
and then asking for a reward to keep it secret (hypothetically).
>
> As I understand trademark law, the problem is in "passing off" and
"dilution"
> of
> the mark. And isn't that actionable in common law -- you can sue?
Passing off is a common law action. It is has very little to do with trade
marks. Trade mark infringement is based on s62(1) of the Act, to wit:
Where someone else "uses a mark which is substantially identical with, or
deceptively similar to, the trade mark, in the course of trade, in relation
to goods or services in respect of which the trade mark is registered."
Clearly is it easy to side step any trade mark issues by the cybersquatter:
- not engaging in trade
- staying well clear of any goods or services covered under the trademark.
Anyone is allowed to open "Apple Drycleaning" but "Apple Electronics" would
fall foul of Apple Computer's trade mark.
The problem is of course that domain names on their own carry little
information about the goods or services. The web page, ftp site, or whatever
would carry that information and a cybersquatter is just not going to be
silly enough to put up information directly infringing a trade mark. So how
do you go about proving trade mark infringement purely from the registration
of a domain name?
Personally I cannot see what IP rights there are over domain names. Passing
off should be as easy to avoid as a trademark, and copyright just doesn't
fit.
Again we have a legal system content that analogies to existing law will
suffice for almost any situation.
There have been some large cases recently in the US, but information in the
press revolves more around the size of the settlement than the issues.
Perhaps someone on this list with more direct involvement in the legal
system than I, could comment on what remedies are available under Australian
law.
Ari Maniatis
>
> The study found there was bias in internet domain resolution. Funny how
you
> want to tilt the bias even further in favour of big business trademark
owners
> !!
>
> Best regards
> Patrick Corliss
>
>
> ----- Original Message -----
> From: Rothnie, Warwick <Warwick.Rothnie&#167;msj.com.au>
> To: <dns&#167;auda.org.au>
> Sent: Tuesday, November 14, 2000 9:01 AM
> Subject: RE: [DNS] Study Finds Bias in Internet domain name dispute
resolution
>
>
>> Mallesons Stephen Jaques
>> Confidential communication
>>
>>> Mueller's report calls for allowing the businesses that sell domain name
>> registrations, rather than challengers or domain >name registrants, to
>> choose an arbitrator.
>>
>> Now that would be a great idea: put the mice in charge of looking after
the
>> cheese and the fox in charge of the henhouse!
>>
>> What we should really do is introduce an anti-cybersquatter law modelled
on
>> the US one with statutory damages (one case recently awarded $500,000)
and
>> cybersquatters would start to realise that blackmail has consequences.
>>
>> Warwick A Rothnie
>> Partner
>> Mallesons Stephen Jaques Melbourne
>> Direct line (61 3) 9643 4254
>> Fax (61 3) 9643 5999
>>
>>
>> -----Original Message-----
>> From: David.Goldstein&#167;sbg.nic.at [mailto:David.Goldstein§sbg.nic.at]
>> Sent: Tuesday, 14 November 2000 3:35:AM
>> To: dns&#167;auda.org.au
>> Subject: [DNS] Study Finds Bias in Internet domain name dispute
>> resolution
>>
>>
>> I came across this article today and it might interest those on this
list.
>>
>> Cheers
>> David
>>
>> Study Finds Bias in Internet domain name dispute resolution
>> (Convergence Center, Syracuse University news release) 9Nov
>> http://dcc.syr.edu/udrpnews.htm
>> The international method of resolving disputes over Internet domain names
>> favors trademark holders over those seeking to register an Internet site,
>> according to a study by researchers at Syracuse University's School of
>> Information Studies. The study was released Nov. 9 by the school's
>> Convergence Center. While the guidelines developed by ICANN are "robust
and
>> fair," both the interpretation of the guidelines and a clause that allows
>> trademark holders to shop around for the most favorable arbitrators has
>> resulted in a system that is biased against Internet domain name
>> registrants, says Milton Mueller, professor and director of the
Convergence
>> Center.
>>
>> The report 'Rough Justice' is available in both html and pdf versions.
See
>> http://dcc.syr.edu/roughjustice.htm or
http://dcc.syr.edu/roughjustice.pdf
>>
>
>
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